Loggerhead Tools, LLC v. Sears Holdings Corporation

Filing 456

MOTION by Defendants Apex Tool Group, LLC, Sears Holdings Corporation, Counter Claimants Apex Tool Group, LLC, Sears Holdings Corporation for judgment as a Matter of Law (Attachments: # 1 Table of Appendices, # 2 Appendix 1, # 3 Appe ndix 2-1, # 4 Appendix 2-2, # 5 Appendix 2-3, # 6 Appendix 2-4, # 7 Appendix 2-5, # 8 Appendix 2-6, # 9 Appendix 2-7, # 10 Appendix 2-8, # 11 Appendix 2-9, # 12 Appendix 2-10, # 13 Appendix 3 - PTX 1, # 14 Appendix 3 - PTX 3, # 15 Appendix 3 - PTX 4, # 16 Appendix 3 - PTX 51, # 17 Appendix 3 - PTX 119, # 18 Appendix 3 - PTX 157, # 19 Appendix 3 - PTX 175, # 20 Appendix 3 - PTX 467, # 21 Appendix 3 - PTX 503, # 22 Appendix 4 - DTX 1, # 23 Appendix 4 - DTX 2 , # 24 Appendix 4 - DTX 3, # 25 Appendix 4 - DTX 5, # 26 Appendix 4 - DTX 7, # 27 Appendix 4 - DTX 8R, # 28 Appendix 4 - DTX 9, # 29 Appendix 4 - DTX 9R, # 30 Appendix 4 - DTX 11, # 31 Appendix 4 - DTX 11R, # 32 Appendix 4 - DTX 23, # 33 Appendix 4 - DTX 24, # 34 Appendix 4 - DTX 74, # 35 Appendix 4 - DTX 75, # 36 Appendix 4 - DTX 212, # 37 Appendix 4 - DTX 213, # 38 Appendix 5)(Sernel, Marcus)

Download PDF
APPENDIX 2-8 Li Willfulness Merged on 5_12 PA DC Li Willfulness Merged on 5_12 PA DC Designation 7:25 -8:3 Source Tx Duration Elapsed Li, Peng 2015-12-04 00:00:10 00:00:00 7:25 17:12 -17:17 Li, Peng 2015-12-04 00:00:16 00:00:10 Li_P-120415-1of4.M M9.3 00:14:52 Li_P-120415-1of4.M M9.4 00:14:36 Li_P-120415-1of4.M M9.5 A. It is. Li, Peng 2015-12-04 28:6 00:01:35 00:00:26 Q. And what was your involvement with the 28:7 Max Axess Locking Wrench development? 28:8 A. My involvement, it was on a high 28:9 level. Basically, make sure this product, 28:10 it's developed in a way that we offer 28:11 competitive product, has Craftsman advantage, 28:12 while not infringe any other -- any other 28:13 patent, has different look, and ship on time. 28:14 That was my -- my -- I would say my 28:15 biggest objective at that time on this project, 28:16 is that the -- we need to make -- ship this 28:17 product without infringing on any other people's 28:18 patent and ship it on time. 28:19 Q. And what did you mean when you said 28:20 has different look? 28:21 A. It -- my understanding, it's -- we 28:22 need to develop something that look different 28:23 than any product out there in the market and 28:24 offers Craftsman advantage. Li, Peng 2015-12-04 35:22 00:00:16 00:02:01 Q. Looking at Li Exhibit 3, Mr. Li, this 35:23 is an analysis of the Loggerhead Bionic wrench? 35:24 A. Okay. Li, Peng 2015-12-04 35:25 00:00:15 00:02:17 Q. I'm asking, do you understand this to 36:1 be an analysis of the Loggerhead Bionic wrench? 36:2 A. I would call this a test report of the 36:3 4:39:38AM 00:16:27 you currently hold? 17:17 5/12/2017 M9.2 Danaher Tool Group, and is this the position 17:16 Printed: Li_P-120415-1of4.M management at Apex Tool Group LLC, formerly 17:15 35:25 -36:3 00:16:43 is vice president engineering and program 17:14 Link > P64.1 M9.1 Q. And your last position listed here 17:13 35:22 -35:24 Li_P-120415-1of4.M L-i. First name P-e-n-g. 17:12 28:6 -28:24 00:16:53 A. Yes. My name is Peng Li. Last name 8:3 Barcode full name for the record? 8:2 Media File Q. Would you please state and spell your 8:1 Remains Bionic wrench. Page 1 of 8 Li Willfulness Merged on 5_12 PA DC 36:21 -37:18 Li, Peng 2015-12-04 36:21 00:01:33 00:02:32 Li_P-120415-1of4.M M9.8 A. Parson, P-a-r-s-o-n. 37:3 Q. Thank you. 37:4 Do you have any knowledge of why a 37:5 Bionic wrench test report may have been created? 37:6 A. I think so. 37:7 We -- we -- one of the -- one 37:8 of the -- this is to try show a Craftsman 37:9 advantage. Like I mentioned a moment ago, 37:10 Craftsman product needs to be better than 37:11 any retail product in the market. So when we 37:12 develop a new innovation product for Craftsman, 37:13 we would normally test the product in the 37:14 market, see where they are, and the Craftsman 37:15 product needs to be better than that. Like, 37:16 in this case, we test the torque performance of 37:17 Bionic wrench, and the Craftsman spec needs to 37:18 be higher than the Bionic wrench. Li, Peng 2015-12-04 00:00:30 00:04:05 38:6 Q. Under wrench markings, if you look at 38:7 Page 1, -- 38:8 A. Yeah. 38:9 Q. -- it's Column A, Row 11, -- 38:10 A. Yeah. 38:11 Q. -- do you see it reads, Pat., number 38:12 sign, -- 38:13 A. Mm-hmm. 38:14 Q. -- 6,889,579? 38:15 A. I see it, yes. 38:16 Q. That's a patent number, isn't it? 38:17 A. Yes, it is. Li, Peng 2015-12-04 00:00:55 00:04:35 38:18 Q. Did Apex investigate this patent 38:19 number, to your knowledge? 38:20 A. Yes. We -- we do invest -- we did 38:21 investigate this patent. 38:22 Q. Do you know how it was investigated? 38:23 A. I was -- you know, my involvement 38:24 4:39:38AM 00:12:18 Q. Can you spell his last name? 37:2 5/12/2017 M9.7 name is Tim Parson. 37:1 Printed: Li_P-120415-1of4.M in Sparks, and the tech -- the lab technician's 36:25 Link > Hide 00:12:48 A. I do. It's probably our test lab 36:24 38:18 -39:8 M9.6 have created this report? 36:23 Link > P64.1.1 Li_P-120415-1of4.M Q. Do you have any knowledge of who may 36:22 38:6 -38:17 00:14:21 was not on a detailed patent investigation. It Page 2 of 8 Li Willfulness Merged on 5_12 PA DC 38:25 was -- Eric Broadaway was responsible for that 39:1 regard, but I recall that we have done extensive 39:2 patent research on that to make sure that we 39:3 do not -- any -- our product developed for 39:4 Craftsman do not infringe that patent and any 39:5 other -- to that regard, any other patents in 39:6 the market. 39:7 39:8 91:5 -91:13 Link > P131.1 That was -- that's just our standard practice for Apex Tool Group. Li, Peng 2015-12-04 00:00:40 91:5 Link > P131.1.1 91:13 Li, Peng 2015-12-04 00:00:30 00:06:10 Li_P-120415-3of4.M M9.12 at the very end, Mr. Broadaway writes, this is the last line of that page, -A. Yeah. 96:22 Q. -- and we're going to go to the next 96:23 page, we need to pay close attention to the 96:24 six-inch Bionic. Sears will likely compare 96:25 them. Our design should be the same, or even 97:1 better than the Bionic in fastener range and 97:2 handle spread. Thanks, Eric. 97:3 97:4 Do you see that? A. I do. Li, Peng 2015-12-04 00:00:32 00:06:40 148:25 Q. Okay. I'm introducing Li Exhibit 17, 149:1 which is Apex 18268 through 18269. This is an 149:2 e-mail chain of two e-mails from Eric Broadaway 149:3 to Apex's general counsel, Michael Munn and 149:4 others. It includes Apex's president John 149:5 Constantine, correct? 149:6 A. Correct. Li, Peng 2015-12-04 00:01:05 00:07:12 149:15 Q. In the top e-mail, Mr. Broadaway's 149:16 third sentence reads, this will likely evoke 149:17 4:39:38AM 00:09:41 Q. Let me draw your attention on Page 1 96:19 96:21 5/12/2017 M9.11 A. Yes, I do. 96:20 Printed: Li_P-120415-3of4.M Do you see that? 96:18 Link > P504.1.1 00:10:13 design work. 91:12 149:15 -150:9 M9.10 I'm paraphrasing what I believe that to be, 91:11 Link > P504.1 Li_P-120415-2of4.M The subject is, re: The Bionic (Max Axess AW), 91:10 148:25 -149:6 00:10:43 and others most recently dated May 20th, 2012. 91:9 Link > P131.2.1 M9.9 This is an e-mail chain between you 91:8 Link > P131.1.2 Li_P-120415-2of4.M is Apex 9233. 91:7 96:18 -97:4 00:11:23 Q. I'm introducing Li Exhibit 10. This 91:6 00:05:30 a response from Loggerhead (Brown patent Page 3 of 8 Li Willfulness Merged on 5_12 PA DC 149:18 6,889,579) because the product is so close 149:19 to their Bionic wrench TM. 149:20 Do you see that? 149:21 A. Yes. 149:22 Q. Do you have an understanding of 149:23 Mr. Broadaway's third sentence about a likely 149:24 Q. And what do you understand? 150:2 A. I would assume it's a lawsuit. 150:3 Q. At the bottom of the e-mail to 150:4 Mr. Munn and Mr. Constantine, Mr. Broadaway 150:5 introduces or includes side-by-side images of 150:6 the then-current view of the Craftsman Bionic 150:7 Link > P504.1.2 A. I do. I do. 150:1 Link > Hide response from Loggerhead? 149:25 with Loggerhead's Bionic wrench. 150:8 150:9 154:20 -155:1 Do you see that? A. I see the two pictures, yes. Li, Peng 2015-12-04 00:00:31 00:08:17 Link > P97.1 154:20 154:21 four attachments. Do you see that? 155:1 M9.14 re: Schedule of Bionic wrench, and it includes 154:25 Li_P-120415-3of4.M others, dated May 30th, 2012. The subject is 154:24 00:08:05 chain between you and Dave Fortin, and copying 154:23 M9.13 which is Apex 2744 through 2749. It's an e-mail 154:22 Li_P-120415-3of4.M Q. Okay. I'm introducing Li Exhibit 19, Link > P97.1.1 00:08:36 A. Yes. 155:12 -156:6 Li, Peng 2015-12-04 00:01:24 00:08:48 155:12 155:13 Link > P97.1.2 Q. In the first paragraph Mr. Fortin is discussing the display design for the Max Axess 155:14 Q. Do you see that? 155:17 A. I do. 155:18 Q. And the attachments on -- beginning 155:19 on Page 3 through 6, those are of the Loggerhead 155:20 display? 155:21 A. Okay. Yeah. 155:22 Q. And on Page 1 Mr. Fortin writes at 155:23 the very end of his e-mail, attached are how the 155:24 Bionic wrenches are captured in their display. 155:25 I feel something similar would work for our 156:1 Link > P97.1.3 A. Okay. 155:16 Link > P97.3 Adjustable Wrench. 155:15 tool. 156:2 Do you see that? 156:3 156:4 5/12/2017 4:39:38AM Q. And he's referring to the Loggerhead 156:5 Printed: A. I do. version of the Bionic wrench, correct? Page 4 of 8 Li Willfulness Merged on 5_12 PA DC 156:6 161:25 -162:10 Link > P356.1 A. I think so. Li, Peng 2015-12-04 00:00:40 161:25 Link > P356.1.1 162:10 Li_P-120415-3of4.M M9.18 00:05:15 Li_P-120415-3of4.M M9.19 A. Yes. Li, Peng 2015-12-04 00:00:11 00:10:52 162:23 Q. Ms. Miles says she's attaching images of the Bionic wrench packaging. Do you see 162:25 that? 163:1 A. I do not see the picture. I see she 163:2 says there -- Li, Peng 2015-12-04 00:00:20 00:11:03 163:12 Q. It's Sears 391 and 392. These are 163:13 pictures of the actual Loggerhead Bionic wrench 163:14 packaging, correct? 163:15 A. I think so, yes. 163:16 Q. Do you need a moment to look at four 163:17 and five to see the picture? 163:18 A. No. I'm looking at it now. It looks 163:19 like it is a Bionic wrench picture packaging, 163:20 yes. Li, Peng 2015-12-04 00:00:15 00:11:23 163:21 Q. All right. And back to Page 1, do 163:22 you know who requested these images of the 163:23 Bionic wrench packaging? 163:24 A. No, I do not. Li, Peng 2015-12-04 00:00:14 163:25 per your request -- 164:2 A. Correct. 164:3 Q. -- on this morning's call, and the to 164:4 line appears to be all Sears -- 164:5 A. Correct. 164:6 Q. -- personnel; is that correct? 164:7 00:11:38 Q. Ms. Miles writes that they're attached 164:1 4:39:38AM 00:05:30 Do you see that? 162:24 5/12/2017 M9.17 includes two attachments. 162:9 Printed: Li_P-120415-3of4.M Wrench and other types of fasteners, and it 162:8 163:25 -164:7 00:05:50 17th, 2012, and the subject is Max Axess Locking 162:7 Link > Hide M9.16 among others, on this e-mail. It's dated August 162:6 163:21 -163:24 Li_P-120415-3of4.M Jennifer Blum, Iqbal Singh, and you are copied, 162:5 Link > P356.5 00:06:01 Jennifer Miles-Losapio to Matthew McDonnell, 162:4 163:12 -163:20 M9.15 This is an e-mail chain between 162:3 Link > P356.1.2 Li_P-120415-3of4.M is Sears 388 through 392. 162:2 162:23 -163:2 00:06:41 Q. I'm introducing Li Exhibit 21, which 162:1 00:10:12 A. That's correct. Page 5 of 8 Li Willfulness Merged on 5_12 PA DC 164:8 -164:10 Li, Peng 2015-12-04 164:8 00:00:07 00:11:52 00:05:01 Li_P-120415-3of4.M M9.20 00:11:59 00:04:54 Li_P-120415-3of4.M M9.21 00:12:01 00:04:52 Li_P-120415-3of4.M M9.22 00:04:32 Li_P-120415-3of4.M M9.23 00:03:49 Li_P-120415-3of4.M M9.24 00:13:22 00:03:31 Li_P-120415-3of4.M M9.25 00:13:30 00:03:23 Li_P-120415-3of4.M M9.26 Q. Do you know why photos of Loggerhead's 164:9 164:14 -164:14 Bionic wrench packaging were relevant to Max 164:10 Axess packaging? Li, Peng 2015-12-04 164:14 165:25 -166:5 00:00:02 THE WITNESS: I don't. Li, Peng 2015-12-04 00:00:20 165:25 166:1 fact that the Loggerhead Bionic wrench had a 166:2 patented mark on it or was patent protected? 166:3 A. I think I -- I do know that the -- the 166:4 Bionic wrench was patented. I think from very 166:5 186:5 -186:16 Q. Do you recall when you learned the early on I think we do know that. Li, Peng 2015-12-04 00:00:43 00:12:21 186:5 rigorous patent clearance process that Apex 186:7 instituted and you felt, very clearly, that the 186:8 Max Axess Locking Adjustable Wrench would not 186:9 infringe the Brown patent, what were you basing 186:10 that on? 186:11 A. That's a lot of word for -- I mean, 186:12 what Eric told me. In many cases, what Eric 186:13 told me, maybe in an e-mail saying we do not 186:14 infringe or we got the lawyer's approval, stuff 186:15 like that. But I normally do not read those 186:16 186:17 -186:22 Q. Earlier when we were discussing the 186:6 lawyer's opinion myself very, very closely. Li, Peng 2015-12-04 00:00:18 186:17 Q. How much responsibility do you 186:18 00:13:04 feel that you bear for helping Apex avoid 186:19 say their responsibility bears -- I would say 186:22 188:19 -188:20 A. Well, I would say not much. I would 186:21 Link > P169.1 infringement? 186:20 in this case Eric takes responsibility of that. Li, Peng 2015-12-04 00:00:08 188:19 188:20 192:23 -193:19 Q. I'm introducing Li Exhibit 26, which is Apex 18748. Li, Peng 2015-12-04 00:01:14 192:23 copied on that, too. I think what happened 193:2 was, this was Eric's proposal that he was 193:3 4:39:38AM A. I think I -- you notice Eric's 193:1 5/12/2017 using the 95 pat -- the 1957 patent? 192:25 Printed: Q. What did you mean in this e-mail by 192:24 Link > P169.1.2 reporting to me. So I sent this to my boss Page 6 of 8 Li Willfulness Merged on 5_12 PA DC 193:4 so he's in the loop. 193:5 I think what I meant is that 193:6 the -- our design could be based on the 1957 193:7 Buchanan patent to avoid any kind of patent 193:8 issue. 193:9 Q. Yes. And your e-mail does state 193:10 A. Yes. 193:13 Q. Did you believe that if you designed 193:14 your product with the 1957 patent design you 193:15 would not be infringing the Loggerhead patents? 193:16 A. Well, my understanding is, if our 193:17 design is based on a 1957 Buchanan patent, we 193:18 would not infringe other people's patent because 193:19 Link > P161.1 without any patent issue this year, correct? 193:12 199:22 -200:16 that, our thought is to launch this project 193:11 the 19 -- 1957 patent has already expired, yes. Li, Peng 2015-12-04 199:22 00:01:22 00:14:44 and Apex president John Constantine copying 200:3 you, dated May 22nd, 2012. The subject is, 200:4 re: Confidential attorney-client privileged 200:5 communication, and it includes one attachment 200:6 which looks, likely, an inline signature. It's 200:7 Image 001.jpg. Actually, I shouldn't say that. 200:8 Did you receive the e-mail in Li 200:9 Exhibit 28? 200:10 A. Yes. Yes. 200:11 Q. And in the second e-mail, do you 200:12 see that Mr. Broadaway asks Mike if -- if Apex 200:13 should wait on another clearance documentation 200:14 from Michael Munn or John Owen? 200:15 Do you see that? 200:16 A. Yes, I see it. I see it. Li, Peng 2015-12-04 00:00:23 00:16:06 200:21 Q. From your responsibility at Apex, do 200:22 you have any understanding of what the purpose 200:23 of seeking a clearance document might be? 200:24 A. My understanding it's -- we're seeking 200:25 a clear document to make sure our design do 201:1 not infringe any patent out there. That's 201:2 4:39:38AM M9.28 Munn, Apex's general counsel, Mr. Broadaway, 200:2 5/12/2017 Li_P-120415-4of4.M Q. This is an e-mail between Michael 200:1 Printed: 00:00:47 A. I got it. 199:25 200:21 -201:2 M9.27 which is Apex 18395. 199:24 Link > P161.1.2 Li_P-120415-4of4.M Q. So I am introducing Li Exhibit 28, 199:23 Link > P161.1.1 00:02:09 my understanding of the clearance document. Page 7 of 8 Li Willfulness Merged on 5_12 PA DC 201:8 -201:10 Li, Peng 2015-12-04 Link > P161.1.3 201:8 00:00:07 M9.29 00:00:17 Li_P-120415-4of4.M M9.30 A. Mm-hmm. Li, Peng 2015-12-04 201:13 00:00:17 00:16:36 Q. And do you understand Mr. Munn's 201:14 instruction as it relates to the project? 201:15 A. I do. 201:16 Q. And what was that instruction? 201:17 A. I think, basically, no need to wait. 201:18 We can -- we can provide Sears today. Play Time for this Script: 00:16:53 Total time for all Scripts in this report: 5/12/2017 Li_P-120415-4of4.M no need to wait. Please go forward. 201:10 Printed: 00:00:24 Q. In the top e-mail, Mr. Munn responds, 201:9 201:13 -201:18 00:16:29 00:16:53 4:39:38AM Page 8 of 8

Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.


Why Is My Information Online?